Failed Second Bite At The Cherry (pie): Federal Court Invalidates Foreign-language Marks Filed In Bad Faith

• Law Firm: Smart & Biggar
• Subject Matter: Consumer Protection, Intellectual Property, Consumer Law, Trademark
• Author: Mr Matthew Burt, Kwan Loh and Evan Nuttall
• Published date: 16 February 2023

The Federal Court recently had occasion to revisit the issue of confusion between foreign-language trademarks involving the use of Chinese characters in Canada.

The litigants in this matter are no strangers to each other. In the early 2010s, the Applicant Cheung's Bakery Products Ltd (CBP) successfully prevented the registration of trademarks which were applied for by an entity related to the Respondent Easywin Ltd (Easywin).

In the present case, CBP succeeded, as it had in the past, on the basis of its Chinese character trademarks. The Court granted its application to expunge from the Trademark Register the following two Chinese Character and Design marks, both registered in the name of Easywin (2023 FC 190):

(collectively, the "Easywin Marks")

The Court declared that the Easywin Marks were invalid on the bases that (i) they are confusingly similar to the trademarks asserted by CBP and (ii) they were filed in bad faith.

Smart & Biggar successfully represented CBP led by Evan Nuttall and Kwan Loh, alongside Matthew Burt and Matthew Norton.

Background

For nearly 50 years, CBP has operated "Anna's Cake House", an award-winning, family-owned bakery business in the Greater Vancouver Area offering bakery-related products and services in association with one or more of the following trademarks featuring Chinese characters:

(collectively the "Cheung Marks")

The Respondent Easywin is a part of the Saint Honore Group of companies, which operate one of the largest chains of bakery stores in Hong Kong and also make and sell bakery-related food products for distribution in Hong Kong, China and foreign markets, including in Canada.

In July 2019, unbeknownst to CBP, Easywin obtained registrations for the Easywin Marks, both of which comprise the identical two Chinese characters ?? that are found in each of the Cheung Marks translating into English as "Anna" or "Anna's" and transliterating to "an na" (in Mandarin) or "on naa" (in Cantonese).

Subsequently, in February 2021, CBP brought an application against Easywin in the Federal Court seeking to expunge the Easywin Marks on the grounds of trademark confusion and bad faith.

Trademark Confusion

The Court confirmed that whether a mark is likely to cause confusion is a question that is to be asked in respect of the particular market in which the goods or services are offered.

As was the case in CBP's previous successes, the Court inferred from the evidence in this case that the likely consumers of the parties' goods and...